Posts Tagged: "IPR Proceedings"

The appellants are appealing from a series of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) where the Board made the controversial decision to deny motions to dismiss the IPRs on a sovereign immunity defense raised by the St. Regis tribe. On appeal, St. Regis and Allergan asks the Federal Circuit to determine whether the PTAB erred either in holding that tribal immunity does not apply to IPR proceedings and in deciding that Allergan was the “effective patent owner,” enabling the IPRs to proceed in the St. Regis tribe’s absence even if tribal immunity applied.

Sen. Harris followed up by asking whether algorithms were mathematical representations of laws of nature. “You’re getting right to the heart of the issue,” Iancu said. What Iancu said after that should be a major breath of fresh air to inventors and patent owners frustrated by Section 101 validity issues in the wake of Alice and Mayo: “This is one place where I believe courts have gone off the initial intent. There are human-made algorithms, human-made algorithms that are the result of human ingenuity that are not set from time immemorial and that are not absolutes, they depend on human choices. Those are very different from E=mc2 and they are very different from the Pythagorean theorem, for example.”

The recent Federal Circuit decision in Elbit Systems of America, LLC v. Thales Visionix, Inc. affirmed a final written decision issued by the Patent Trial and Appeal Board (PTAB), which upheld some claims in an inter partes review (IPR) proceeding challenging the validity of Thales’ U.S. Patent No. 6474159, titled Motion-Tracking and issued in November 2002. The patent claims a system for tracking the motion of an object relative to a moving reference frame using a first inertial sensor mounted on the tracked object, a second inertial sensor mounted on the moving reference frame and an element that receives signals from both inertial sensors to determine an orientation of the object relative to the moving reference frame. The resulting invention enables the use of inertial head-tracking systems for platforms including flight simulators and other vehicular applications.

Apple raised concerns of due process implications of ex parte communications and their impact on its trial. Apple’s motion demonstrates that PTAB does not publish ex parte communications into the administrative record as required by the APA, which is the exact issue Saint Regis requested discovery on and was denied… The PTAB’s decision to largely prevent the Saint Regis tribe from filing any additional papers in the case to which they are a party seems remarkable given the fact that the PTAB has opened up the proceedings of the Saint Regis trials to allow amicus briefings from third parties with an interest in the case. So, it would seem that the PTAB seems more interested in giving the agency’s supporters a say in these cases than the actual patent owner whose property rights are on the line, hardly the result one would anticipate if the PTAB were a court operating with any true sense of justice.

D’Agostino’s appeal challenges PTAB authority to entertain invalidity on remand as no part of the IPR statute found in the America Invents Act (AIA) permits PTAB action more than 18 months after institution… The Federal Circuit remanded the reversed claim construction to the PTAB for further proceedings “not inconsistent with [the Court’s] opinion.” On appeal to the Federal Circuit, D’Agostino argued that the PTAB lacked the jurisdiction to entertain unpatentability on remand as no part of the IPR statute found in the America Invents Act (AIA) of 2011 permits Board action more than 18 months after institution, rendering that decision on remand ultra vires.

When going through the list of patents that have been deemed valid in district court and then invalidated through PTAB proceedings, there are 58 cases where the patent is invalidated at the PTAB on the same statutory grounds asserted at district court and which did not lead to invalidity. So, contrary to any notion that any data we’ve published fails to pass muster, there is plenty of evidence that the activities of the PTAB present an unfair playing ground for patent owners who are dragged before it, often after those patent owners have already been victorious in district court in proceedings where Article III federal judges have confirmed the validity of those patents.

Doubtless there are some manufacturing firms, such as Telebrands, who are great endorsers of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) and how that agency has found in favor of copy-cats even as federal courts have repeatedly issued injunctions and found in favor of the inventor of an award winning toy (see here and here).But the manufacturing sector did not all line up in favor of Greene’s Energy Group, although most did. Nevertheless, given that manufacturing firms tend to license patents and do not necessarily develop their own technologies, it is informative to see how this sector feels that the Supreme Court should decide Oil States.

A jury verdict recently entered in a patent infringement case in the Eastern District of Texas held that plaintiff Packet Intelligence, a patent owning entity headquartered in Marshall, TX, did not prove infringement of claims from three patents asserted against Canadian communications service solutions provider Sandvine Corporation (TSE:SVC). The jury verdict comes less than one month after Packet Intelligence won a jury verdict of infringement on the same asserted patents in a different Eastern Texas case filed against Westford, MA-based application and network performance management firm NetScout Systems (NASDAQ:NTCT).

On the afternoon of Wednesday, November 29th, the U.S. Senate Committee on the Judiciary held a hearing to consider the nomination of four political appointees from the Trump Administration. Included among the days’ nominees was Andrei Iancu, President Trump’s selection to serve as Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. Though the nomination hearing was brief and Iancu’s remarks were very measured, there would be reason for patent owners to think that a more balanced playing field at the USPTO could start to form should Iancu be confirmed as Director of the agency.

October 30th was a very busy day for amici filing briefs with the U.S. Supreme Court on how the highest court in the nation should decide in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, a case in which oral arguments will be heard on November 27th. Many of the briefs filed on the 30th were submitted by some of the biggest names in the tech industry. Taking a look at briefs filed by this major companies, some of whom have been seeing great success in patent validity trials at the Patent Trial and Appeal Board (PTAB), it’s both revealing and unsurprising to find how the tech ruling class feels that the Supreme Court should decide in Oil States.

A review of amicus briefs filed with the U.S. Supreme Court in advance of oral arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC revealed that, by and large, the American tech ruling class wishes to see SCOTUS leave the Patent Trial and Appeal Board (PTAB) intact in the face of the constitutional challenges facing the PTAB in the case. Today, we’ll review a series of briefs filed by amici representing many of the smaller players in the U.S. patent system who have by and large been railroaded at the PTAB, an agency which invalidates patents at an incredibly high rate, fails to follow Congressional statutes regulating its own activities and stacks administrative patent judge (APJ) panels to achieve policy objectives desired by the Director of the U.S. Patent and Trademark Office.

In two final decisions and five decisions on IPR institution, the PTAB panel of administrative patent judges (APJs) found that petitioners Apple and AT&T did not meet the required burden of proof to invalidate two VoIP-Pal patents. In the final written decisions, Apple and AT&T failed to prove invalidity of the challenged claims by a preponderance of the evidence. Similarly, the PTAB found that neither party had shown a reasonable likelihood of invalidity at the institution stage in the other cases. Along with last November’s denial of an IPR petition filed by Unified Patents, the VoIP-Pal patents have been unscathed through a total of eight IPR petitions.

Luckily for Apple and Microsoft, however, VirnetX did not assert the ‘135 patent against Mangrove Partners, a hedge fund, which filed a petition for IPR against the ‘135 patent on April 14th, 2015; Mangrove reportedly shorted VirnetX stock around this time. On October 7th, 2015, the PTAB panel adjudicating the case decided to institute the IPR as the petitioner Mangrove had demonstrated a reasonable likelihood of proving invalidity of the challenged claims. Then in January 2016, Apple was successful in having its petition for IPR review of the challenged ‘135 claims joined to Mangrove’s IPR. VirnetX had objected to Apple’s motion for joinder based on the Section 315(b) language but the PTAB found that Section 315(b) did not apply to joinder motions which are governed by 35 U.S.C. § 315(c).

However, what if the Board refuses to terminate an IPR despite a joint request by both parties based on a settlement and proceeds to a final written decision? As indicated in Section 317, a joint request for termination may not be granted if the Office has decided the merits of the proceeding before the request for termination is filed. Although the section does not specifically list or explain the criteria for determining the merits of the proceeding to a final written decision, there are cases providing us with a number of considerations… From the cases above, it can be seen that even when the Board terminates an IPR as to a petitioner, it may nevertheless proceed to a final written decision when the trial issues have been fully briefed and argued at the time the parties move to terminate an IPR. The Board may also proceed to a decision on the merits when there is a large number of existing district court cases involving the patent at issue.

Partial institutions lessen the value of estoppel because the petitioner avoids estoppel on claims that were challenged but not instituted. The PTAB never issues a final written decision for these challenged-but-not-instituted claims. And because estoppel only applies to claims receiving a final written decision, these non-instituted claims escape the estoppel statute See, e.g., Shaw Industries Group v. Automated Creed Systems, 817 F.3d 1293, 1300 (Fed. Cir. 2016). In effect, the PTAB’s current practice saves a petitioner from estoppel on claims it had little chance of invalidating. Thus, under the current practice, a petitioner currently only risks estoppel on claims that it stands a good chance of invalidating. But if the Supreme Court decides as expected, estoppel will attach to all challenged claims of an instituted IPR. Final written decisions will more often include claims found valid, and a petitioner will no longer be able to avoid estoppel for some claims by relying on the PTAB to sort strong challenges from weak ones at the institution stage.